How does the USPTO determine if a subcombination has separate utility?
How does the USPTO determine if a subcombination has separate utility?
The USPTO determines if a subcombination has separate utility by assessing whether it can be used independently of the combination. According to MPEP 806.05(a):
“To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search.”
The examiner must show that:
- The subcombination has utility other than in the disclosed combination.
- The combination does not require the particulars of the subcombination as claimed for patentability.
For example, a nail (subcombination) has separate utility from a hammer (combination) as it can be used with other tools or by hand.
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